Federal Court Decision Supports Conclusiveness of a “Final Action”

In the recent decision of Bartley v Canada (Commissioner of Patents) 2011 FC 873 (Bartley), Justice Hughes of the Federal Court has elaborated on the procedure for resolving an impasse between a patent applicant and the patent examiner (Examiner) on a Final Action. In the process, the Federal Court made a clear statement on the conclusive nature of a Final Action in a patent prosecution. In Bartley, on the recommendation of the Patent Appeal Board (PAB), the Commissioner of Patents (Commissioner) had found the Examiner’s Final Action rejection unjustified and reversed the decision, but returned the matter to the Examiner to “address any outstanding defects” in the application. When the Examiner, in a further requisition, restated old objections and raised new prior art, the Commissioner was petitioned by the applicant’s patent agent to ignore the requisition and to direct that the application be allowed on the basis that the Commissioner’s earlier decision amounted to overcoming the Final Action, putting the application in condition for allowance. After the Commissioner refused the applicant’s petition to grant the patent, this judicial review was sought. In the result, the Federal Court ordered allowance of the patent application and in the process, highlighted the key elements of a Final Action. Caselaw has interpreted the Patent Rules requirement that a Final Action address “outstanding defects” as meaning “all outstanding defects”. A Final Action is intended to dispose of a patent application, and cannot result in further examination on issues not raised in the Final Action Report. Accordingly, in Bartley, the Federal Court affirms that a Final Action is indeed ‘final’. This interpretation is buttressed by the right of the applicant to be heard by the PAB on the substance of a Final Action. Forcing the applicant to address further rejections on reserved matters with the Examiner would erode this right, depriving the applicant of a chance to dispute these matters conclusively with the PAB. For the full text of the Bartley case, see: http://tinyurl.com/3pepkhh Summary by: John Lucas